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Eric S. Walters

Eric Walters focuses his practice on intellectual property disputes and strategic advice involving patents, trade secrets, trademarks, copyrights, and licensing. He represents clients in a wide range of industries, including software, hardware, mobile, digital media, biotechnology, semiconductors, medical devices, energy, and consumer products.

Eric's strategic approach has a demonstrated track record of success, often resulting in victory at an early stage of the litigation through early summary judgment, dismissal, or a favorable settlement.

Eric also represents clients in patent challenges before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, as well as IP portfolio management and strategy.

Representative Experience

MasterMine, Inc. v. Microsoft Corp.

Obtained stipulated dismissal with prejudice in district court after favorable claim construction in patent lawsuit involving Customer Relationship Management (CRM) software. (D. Minn. 2016; Fed. Cir. Ongoing)

Secure Web Conference Corp. v. Citrix, Inc.

Represented the defendant in patent lawsuit relating to online Web conferencing technology. Plaintiff dismissed the case after claim construction briefing was completed. (E.D.N.Y. 2014)

Message Notification Technologies LLC. v. Microsoft Corp.

Represented the defendant in patent lawsuit relating to email notification systems. The plaintiff dismissed the lawsuit with prejudice after IPR filed. (D. Del. 2015)

Source Vagabond Systems v. Hydrapak, Inc.

In lawsuit described as the “patent equivalent of a no hitter” by AmLaw publication, obtained summary judgment of non-infringement based on motion filed three months after suit filed, a complete stay on discovery and recovery of $200,000 in Rule 11 sanctions. Also served as lead counsel on appeal, where grant of summary judgment and Rule 11 orders were affirmed in their entirety. (S.D.N.Y. 2012; Fed. Cir. 2013 and 2014)

CAP Co., Ltd. v. Microsoft Corp.

Representing the defendant in patent lawsuit relating to firewall and anti-virus technology. (N.D. Cal. and W.D. Wash. Ongoing)

Verasonics v. Alpinion

Representing the claimant in AAA arbitration involving claims for trade secret misappropriation and breach of contract relating to industry-leading research ultrasound technology. (AAA and W.D. Wash. Ongoing)

Alzheimer’s Institute of America v. CoMentis, Inc.

Represented defendant in patent infringement lawsuit involving Alzheimer’s drug development tools. Successfully obtained dismissal of lawsuit for lack of standing. (W.D. Okla. 2012)

511 Innovations LLC v. Microsoft Corp.

Represented the defendant in patent infringement lawsuit involving optical sensors. Case was successfully resolved via settlement. (E.D. Tex. 2016)

Memory Integrity LLC v. Microsoft Corp.

Represented the defendant in patent lawsuit concerning multi-core processors. (D. Del. 2016)

Vantage Point Technology Inc. v. Microsoft Corp.

Represented the defendant in patent lawsuit relating to core processors used in tablet computers. (E.D. Tex. 2016)

Clear With Computers v. Swisher Acquisition, Inc.

Successfully represented defendant in patent infringement lawsuit involving internet sales proposals, resulting in the plaintiff dismissing the action. (E.D. Tex. 2013)

Regents of the University of California v. Genentech, Inc.*

Counsel for the plaintiff in patent infringement lawsuit over pioneering biotechnology patent. After six-week trial, case settled for $200 million. (N.D. Cal. 1999)

DiCon Fiberoptics, Inc. v. Preciseley, Inc.

Represented the plaintiff in patent infringement action regarding MEMS fiber optic technology before successfully resolving the case through settlement. (N.D. Cal. 2016)

SkipPrint LLC v. AlphaGraphics, Inc.

Represented the defendant in patent lawsuit relating to internet form ordering and Web-to-print technology before successfully resolving case through settlement. (D. Utah 2014)

WhiteHat Security, Inc. v. Cenzic, Inc.

Represented Declaratory Judgment plaintiff in lawsuit involving patent relating to website security, successfully obtained settlement on favorable terms. (N.D. Cal. 2013)

CoMentis, Inc. v. Purdue Research Foundation

Represented the plaintiff in trade secret and licensing dispute with company founder and his university employer arising out of development of small molecule drugs for the treatment of Alzheimer’s disease. (N.D. Ind. 2012)

Unified Messaging Solutions LLC v. Interactive One, Inc.

Represented defendant in patent infringement lawsuit involving social network messaging, successfully obtained settlement on favorable terms. (S.D.N.Y./N.D. Ill. 2013)

Confidential JAMS Mediation involving Co-Generation Facility

In commercial dispute involving large co-generation facility, opposing party withdrew its claims in their entirety after successful mediation. (JAMS 2012)

AAA arbitration involving dispute concerning license to contact lens patents*

Prevailed on all issues, including grant of attorney’s fees and costs on behalf of client. (A.A.A. 2010)

Digital Security Systems Corporation, LLC v. Funai Corporation*

Successfully represented defendant in patent litigation involving Blu-Ray® encryption standards. Case dismissed after patents were acquired by RPX. (E.D. Tex. 2009)

AAA arbitration involving MMS software*

Obtained early settlement on favorable terms after successful mediation in case involving licensing dispute relating to MMS infrastructure software. (A.A.A. 2010)

Aliphcom v. WiLAN, Inc.*

Represented Aliphcom (Jawbone) as declaratory judgment plaintiff and defendant in parallel lawsuits in E.D. Texas and N.D. Calif. involving patents relating to Bluetooth technology. Legal strategy resulted in early settlement on favorable terms. (E.D. Tex. and N.D. Cal. 2010)

Vlingo Corp. v. Nuance, Inc.*

Represented defendant in unfair competition action arising out of patent infringement claims relating to speech recognition technology. (D. Mass. 2012)

Electroglas, Inc. v. Form Factor, Inc.*

Obtained temporary restraining order barring transfer from escrow of intellectual property involving semiconductor wafer prober software technology. Case later resolved favorably with defendant’s purchase of client’s assets. (Santa Clara Cnty. (Calif.) Super. Ct. 2009)

Applied Materials v. Advanced Micro Fabrication Equipment*

Represented defendant in connection with pretrial proceedings, including lead responsibility for preparing critical motion that resulted in damages exposure  being reduced by 70 percent. Case settled shortly thereafter on confidential terms. (N.D. Cal. 2011)

Iconix, Inc. v. Tokuda*

Obtained preliminary injunction against former employees who developed software and launched website while working for Iconix. The case settled on favorable terms shortly thereafter. The resulting opinion has become a leading case in the area of copyright infringement and the rights of companies to work product created using company resources. (N.D. Cal. 2006)

U.S. ex rel Boisvert v. FMC Corporation*

Member of trial team in high profile False Claims Act lawsuit resulting in jury verdict worth an estimated $400 million. (N.D. Cal. 1998)

AGEN Biomedical Ltd. v. Biopool Intl, Inc.*

Represented the plaintiff and obtained favorable settlement in patent litigation against competitor involving antibodies for diagnosis of deep vein thrombosis. (N.D. Cal. 2001)

Sinclair Systems v. FMC Corporation*

Obtained preliminary injunction against competitor in patent infringement lawsuit involving labeling technology. Case settled shortly thereafter on favorable terms. (N.D. Cal. 2000)

JAMS mediation*

Lead attorney in dispute relating to patent license involving small molecules and other technology use for use in treating inflammatory and neurological diseases. Resolved dispute on favorable terms in mediation, while avoiding damage to ongoing relationship between licensor and licensee. (J.A.M.S. 2006)

Sims v. DNR Sportsystems (Marker Intl.)*

Obtained state court preliminary injunction against licensee’s marketing of snowboard products and, after four-week trial, obtained AAA arbitration award successfully terminating trademark license. (AAA and Santa Barbara Cnty. (Calif.) Super. Ct. 1997) 
* Denotes experience completed at a prior firm

Additional Qualifications

  • Partner, Morrison & Foerster LLP, Palo Alto, Calif., 1999-2012
  • Associate, Jackson, Tufts, Cole & Black, LLP, San Jose, Calif., 1996-1999
  • Attorney, National Wildlife Federation, University of Michigan Law School, Ann Arbor, Mich., 1994-1996
  • Project Attorney, Sierra Club Legal Defense Fund, Honolulu, Hawaii, 1992-1994
  • Associate, Howard, Rice, Nemerovski, Canady, Robertson & Falk, PC, San Francisco, 1990-1992

Professional & Community Activities

  • ABA
  • San Francisco Bay Area Intellectual Property Inn of Court

Professional Recognition

  • Selected to "Northern California Super Lawyers," Thomson Reuters, 2014-2016